Lucas­film — Repli­ca Star Wars impe­r­i­al stormtroop­er hel­mets not pro­tect­ed by copyright

In Brief

The UK Supreme Court recent­ly hand­ed down its deci­sion in an appeal by Lucas­film con­cern­ing the intel­lec­tu­al prop­er­ty rights in var­i­ous arte­facts made for use in the first Star Wars film and repro­duced by Mr Ainsworth in 2004.

This deci­sion is a vital les­son for any­one in Aus­tralia involved in the mer­chan­dis­ing, or com­mer­cial­i­sa­tion, of 3D objects, such as fig­urines, fur­ni­ture or light­ing. The deci­sion high­lights the crit­i­cal impor­tance of obtain­ing advice and any avail­able reg­is­tered design pro­tec­tion, if you want to ensure you have the abil­i­ty to con­trol the use, pro­duc­tion and sale of those objects. It is also crit­i­cal that any steps to obtain reg­is­tered design rights, to pro­tect your mar­ket, are tak­en ear­ly, and before any sale or oth­er com­mer­cial­i­sa­tion of the objects. 

The most inter­est­ing arte­fact repro­duced, and the focus of much dis­cus­sion in the appeal, was the icon­ic impe­r­i­al stormtroop­er helmet. 

The Respon­dent, Mr Ainsworth, was engaged by George Lucas around 1976 to pro­duce sev­er­al pro­to­type, vac­u­um-mould­ed stormtroop­er hel­mets which, once approved, were made by Mr Ainsworth into 50 hel­mets for use in the first STAR WARS film released in 1977.

In 2004, Mr Ainsworth used his orig­i­nal tools to make ver­sions of the stormtroop­er hel­mets for sale to the public. 

Lucas­film sued alleg­ing copy­right infringe­ment. One of the issues to be deter­mined by the Court was whether the stormtroop­er hel­met was pro­tect­ed by copy­right, as a sculpture. 

The argu­ment cen­tered on what was the right approach to three dimen­sion­al objects that have both an artis­tic pur­pose and a util­i­tar­i­an function. 

Lucas­film con­tend­ed that the hel­met is a sculp­ture because its pur­pose is whol­ly artis­tic and that it had no prac­ti­cal func­tion at all. It argued the hel­mets’ sole pur­pose was to make a visu­al impres­sion on the filmgoer.” 

The judge at first instance and the Court of Appeal did not agree, deter­min­ing that the hel­met was a mix­ture of cos­tume and prop, with its pri­ma­ry func­tion being util­i­tar­i­an. The Court con­clud­ed that it did not have the nec­es­sary qual­i­ty of artis­tic cre­ation and so was not pro­tect­ed by copy­right, and could be made by Mr Ainsworth with­out permission. 

Not sur­pris­ing­ly, Lucas­film appealed, as this char­ac­ter­i­sa­tion has a sig­nif­i­cant impact on its abil­i­ty to con­trol very valu­able mer­chan­dis­ing rights. 

On appeal, the Supreme Court agreed with the low­er courts. It held that the hel­met was part of a pro­duc­tion process, being a mix­ture of cos­tume and prop in order to con­tribute to the artis­tic effect of the film as a film. The Court noted: 

It would not with the nor­mal use of the lan­guage to apply the term sculp­ture” to a 20th cen­tu­ry mil­i­tary hel­met used in the mak­ing of a film, whether it was a real thing or a repli­ca made in dif­fer­ent mate­r­i­al, how­ev­er great its con­tri­bu­tion to the artis­tic effect of the fin­ished film”.

Under the Aus­tralian Copy­right Act 1968, an artis­tic work may also com­prise a sculp­ture whether the work is of artis­tic qual­i­ty or not. How­ev­er, a 3 dimen­sion­al object (such as this hel­met) los­es copy­right pro­tec­tion once com­mer­cialised unless it is a work of artis­tic crafts­man­ship”. If it is not such a work of artis­tic crafts­man­ship, the own­er (Lucas­film) can only rely on exclu­sive rights giv­en by obtain­ing a reg­is­tered design for the shape of the article.

While the tests for deter­min­ing whether a work is one of artis­tic crafts­man­ship are com­plex, put sim­ply the issue is whether, con­sid­ered objec­tive­ly, the work is designed pri­mar­i­ly for func­tion­al rather than aes­thet­ic rea­sons. Apply­ing the Supreme Court’s rea­sons, it is like­ly that a sim­i­lar deci­sion would be reached in Aus­tralia, with the Courts find­ing that there is an impor­tant dis­tinc­tion between the aes­thet­ics of a film, as a film, and those of the props used in the film, being a util­i­tar­i­an part of a pro­duc­tion process.

For fur­ther infor­ma­tion, please con­tact Swaab Attorneys.

Co-authored by M Hall.